1.Brand Concept
Article 4 of the Industrial Property Law No. 6769 (IPL) states:
“A trademark may consist of any kind of signs, including words, including personal names, figures, colors, colors, letters, numbers, sounds and the form of the goods or their packaging, provided that they enable the goods or services of one undertaking to be distinguished from the goods or services of another undertaking and that they can be displayed in the register in such a way that the subject matter of the protection granted to the trademark owner can be clearly and precisely understood.”
The concept of trademark is indirectly regulated.
2.Basic Elements of a Trademark
As it is understood from the article of the Law, there are three basic elements of a trademark and the first of these elements is the existence of a sign. As stated in Article 4 of the IPL, a trademark may consist of all kinds of signs such as words, shapes, letters, sounds.
Another element of a trademark is the distinctive character of the sign used. What is meant by distinctiveness is that a sign must primarily distinguish the goods or services of one undertaking from the goods or services of another undertaking.
Article 4 of the IPL, which regulates the signs that may be trademarks, also specifies the element of being registrable in the registry. As is known, trademark protection is obtained through registration. As it is clearly stated that signs such as sounds and odors can also be trademarks, it is accepted that signs can be perceived not only by the eye but also by other sensory organs. As a result of this, the signs that may be trademarks will be displayed in the registry in line with the perception of the relevant sense organs.
3.Invalidity of Trademark – Reasons for Absolute Refusal
In trademark law, invalidity refers to the cancellation and invalidation of a registered trademark because it does not have the necessary conditions. Article 25 of the IPL regulates the invalidity of the trademark:
“In the event that one of the conditions listed in Article 5 or Article 6 is present, the court shall decide on the invalidity of the trademark”
A reference is also made to the absolute grounds for refusal regulated in Article 5 of the same Law. Absolute grounds for refusal are related to public order and are taken into consideration ex officio by the Turkish Patent and Trademark Office (TPMK) and the courts. The absolute grounds for refusal listed as grounds for invalidity in Article 5 of the IPL are as follows:
- Signs that do not qualify as trademarks
Signs that are not distinctive in any way
Signs containing the characteristics of the goods or services
Signs identical or indistinguishably similar to a registered trademark or a trademark for which an application for registration has been filed
Signs used by everyone in the field of commerce or used to distinguish those belonging to a particular profession, art or trade group
Signs that contain a shape or other feature related to the original structure, technical necessity of the goods
Signs that mislead the public about the nature, quality or geographical origin of the goods or services
Signs to be rejected according to Article 6 of the Paris Convention, 2nd repetition
Signs which are outside the scope of Article 6 of the 2nd Repeated Article 2 of the Paris Convention and which have certain characteristics
Signs containing religious values or symbols
Signs contrary to public order or public morality
Signs consisting of a registered geographical indication or containing a registered geographical indication
4.Exceptions to Invalidity Caused by Absolute Reasons for Refusal
Exceptions to the absolute grounds for refusal are regulated in paragraphs 2 and 3 of Article 5 of the IPL. Article 5/2 of the IPL states:
“If a trademark has been used before the application date and has acquired distinctive character as a result of this use in terms of the goods or services subject to the application, the registration of this trademark cannot be refused according to subparagraphs (b), (c) and (d) of the first paragraph.”
As such, it is allowed to register trademarks that have gained distinctiveness as a result of use. However, what is meant by the use of the trademark here is not an ordinary use, but an intensive use that will give the trademark distinctiveness.
Another exception to the absolute bar to registration is provided in Article 5/3 of the IPL:
“A trademark application may not be refused pursuant to subparagraph (ç) of the first paragraph if a notarized document showing that the previous trademark owner expressly consents to the registration of the application is submitted to the Office. The procedures and principles regarding the consent shall be determined by regulation.”
It is stipulated as follows. Article 5/1-ç of the IPL stipulates that trademarks that are identical or indistinguishably similar to a trademark that has been registered or for which a registration application has been made in the previous date in relation to the same or the same type of goods or services cannot be registered. However, Article 5/3 of the IPL stipulates that a trademark may be registered in the name of one person while it is registered in the name of another person.
The validity conditions of the aforementioned consent form are specified in Article 10 of the IPR Regulation. The relevant article states that the consent must be issued in the form of a signed form accepted as valid by the Office and must be approved by a notary public.
5.Invalidity of Trademark – Relative Reasons for Refusal
Relative grounds for refusal, unlike absolute grounds for refusal, are not related to public order, but are based on the alleged existence of superior rights of third parties. Therefore, relative grounds for refusal cannot be taken into consideration ex officio by the IPC. The relative grounds for refusal specified in Article 6 of the IPL are as follows:
- The trademark applied for registration is identical or similar to a trademark that has already been registered or for which an application for registration has already been made, and these trademarks cover the same or similar goods or services and are likely to be confused by the public
Filing a trademark application by the trademark owner’s commercial agent or representative without authorization and without a justifiable reason
Objection by the right holder of an unregistered or commercially used sign
Objection by the right holder of an unregistered or commercially used sign
The owner of a well-known trademark may oppose an identical or similar trademark application if certain conditions are met
The trademark covers another person’s name, trade name, photograph, copyright or any other intellectual property right
Requesting the registration of the same or similar common or guarantee trademark that has not been renewed within a certain period of time
Requesting the registration of the same or similar registered trademark that has not been renewed for a certain period of time
Filing a trademark application in bad faith
6.Loss of Rights through Silence
Article 25(6) of the IPL states:
“If the trademark proprietor knows or should have known that a later trademark is being used, but has remained silent for five consecutive years, he may not invalidate his trademark, unless the registration of the later trademark is in bad faith.”
As stipulated in this provision, if the owner of the earlier trademark knows or should have known about the later use, but has remained silent for five years without interruption, it will be deemed to have consented to the later use to the point of a right.
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